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#Consep .com : A 2008 #domain name lost to a 2012 Aussie trademark

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UDRP result: Transfer domain.

When you get no legal representation in a UDRP, chances are you’d lose the domain.

In the case of Consep.com, a domain registered in 2008, the Complainant’s trademark registration is four years younger.

And yet, Mr. Grant Steward Director of Consep Pty Ltd Australia, won the case at the WIPO, with the sole panelist, Andrew J. Park, siding with their view that the mark is “famous” and in use since the company formed in 1991.

How would an Australian trademark be known to a Korean registrant before it existed, that’s an argument that requires the services of a competent IP attorney; in this case, there was even a language barrier as the Respondent pointed out.

End result: Consep.com was ordered to be transferred to the Complainant. Full details of this case follow:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mr. Grant Steward Director Consep Pty Ltd Australia v. Admin
Case No. D2019-0425

1. The Parties

The Complainant is Mr. Grant Steward Director Consep Pty Ltd Australia of Sydney, New South Wales, Australia, represented by Jipra Pty Ltd, Australia.

The Respondent is Admin of Daegu, Republic of Korea, self-represented.

2. The Domain Name and Registrar

The disputed domain name <consep.com> is registered with Gabia, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2019. On February 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On February 27, 2019, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On February 28, 2019, the Complainant requested for English to be the language of the proceeding. On March 3, 2019, the Respondent requested for Korean to be the language of the proceeding.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Korean of the Complaint, and the proceedings commenced on March 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2019. The Center received an informal email communication from the Respondent on March 25, 2019. On March 26, 2019, the Center informed the Parties that it would proceed to panel appointment.

The Center appointed Andrew J. Park as the sole panelist in this matter on April 16, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant, Mr. Grant Steward Director Consep Pty Ltd., is an Australian company which directs the Consep business providing engineering solutions, including process, mechanical, electrical and automation design solutions to site building, mining and other operations in over 30 countries as an international operation. The Complainant manages and nurtures its client’s business relationships via its easy-to-use marketing technology and in-depth knowledge of how professional and financial services firms operate and create a “B2B” digital marketing solution. The Complainant registered its business name “Consep” in 1991 and has had this registration for over 28 years in the Australian Securities and Investments Commissions Register.

The Complainant filed Australian trademark application No. 1489533 for the mark CONSEP in connection with the goods & services in five classes, and was registered on December 10, 2012.

The disputed domain name <consep.com> was registered by the Respondent on December 14, 2008 and resolves to a pay-per-click site.

The Respondent sent an informal email communication requesting for Korean to be the language of the proceedings on March 3, 2019. The Complainant also requested for English to be the language of the proceedings on the grounds that the website which the disputed domain name resolves to is in English and the Respondent has engaged in negotiations, via their nominated broker, for the sale of the disputed domain name to the Complainant in the English language, and lastly, the translation of the complaint and other related documents would cause the Complainant to incur additional costs to take action against the Respondent acting in bad faith.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name should be transferred to the Complainant because:

1) the disputed domain name <consep.com> is identical and confusingly similar to the Complainant’s trademark in which the Complainant has rights. The Respondent’s disputed domain name is identical to the Complainant’s registered CONSEP mark. The Complainant’s use of the CONSEP mark is a distinctive identifier for which consumers associate with the Complainant’s goods and services. The Complainant’s distinctiveness has also been recognized by the Australian Government via the Australian Export Awards, where the Complainant was the winner in both 2015 and 2016 for the Premier’s NSW Export Awards.

2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant argues that as the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant or any other party who would offer to purchase it.

3) the disputed domain name was registered and is being used in bad faith. The website which the disputed domain name resolves to has listed a sign at the top of the webpage indicating that the disputed domain name is for sale. The Complainant sought to purchase the disputed domain name and contacted the broker of the Respondent offering USD 5,000. The broker asked for a minimum amount of USD 10,000 for the disputed domain name. This price is well in excess of the Respondent’s documented out-of-pocket costs and shows that the Respondent registered the disputed domain name, and said disputed domain name is being used in bad faith.

B. Respondent

On March 3, 2019, the Respondent sent an informal email communication arguing that:

1) the proceedings must be conducted in Korean because (a) there was no agreement between the Complainant and the Respondent that the proceedings should be conducted in English and (b) the Respondent was born in Korea and therefore does not understand English.

2) the Respondent cannot submit a response because it does not understand the Complaint written in English.

Further, on March 25, 2019, the Respondent sent a second informal email communication manifesting its intent to seek an agreement with the Complainant.

6. Discussion and Findings

A. Language of Proceeding

The registration agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the proceeding shall be the language of the registration agreement, i.e., Korean.

Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:

1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean;

2) The Respondent corresponded with the Complainant in English in discussions over the sale of the disputed domain name, a fact which supports the view that the Respondent understands the English language.

3) The website which the disputed domain name resolved to has content that is all in English.

4) The Panel is proficient in both English and Korean, capable of reviewing all documents and materials in both languages and is able to give full consideration to the Parties’ respective arguments.

In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; and (2) issue a decision in English.

B. Identical or Confusingly Similar

This element consists of two parts; first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.

The Panel finds that the Complainant has established registered rights in the mark CONSEP and that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, and the addition of the generic Top-Level Domain (“gTLD”) extension “.com” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).

For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

Here, the Panel finds that the Complainant has made out a prima facie case.

The Respondent has no relationship with or authorization from the Complainant to use its trademark. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name.

Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(i), and (ii), by using the disputed domain name for the purpose of selling, or transferring the disputed domain name registration to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name and by preventing the Complainant, the owner of the trademark or service mark from reflecting the mark in the corresponding disputed domain name. The Respondent created the disputed domain name which is confusingly similar to the Complainant’s trademark CONSEP with the knowledge of the Complainant’s famous trademarks and its business.

The Panel recognizes the fact that the Complainant’s trademark registration of CONSEP is 4 years after the Respondent becoming the owner of the disputed domain name in 2008. However, the Panel finds that the Complainant’s trademark is well known, and that it has been used in commerce since at least 1991. The disputed domain name is identical or confusingly similar to the Complainant’s earlier trademark and the Panel confirms that there is no evidence whatsoever that the Respondent is currently using the disputed domain name with a bona fide purpose or that it is commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the disputed domain name or the name. It is clear that the Respondent registered the disputed domain name with the knowledge of the Complainant’s famous trademark and its business.

Accordingly, the evidence, including the communications between the Complainant and the Respondent’s broker show that the Respondent likely knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademark and prevented the Complainant from reflecting the mark in the corresponding disputed domain name in order to resell the disputed domain name to the Complainant for commercial gain. Additionally, the Responded has manifested its intent to reach an agreement with the Complainant. See paragraph 4(b)(i) of the Policy.

As the conduct described above falls squarely within paragraph 4(b)(i) and (ii) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <consep.com> be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: May 1, 2019


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